IP Toolbox

John Thomson is a young entrepreneur and community college graduate. He owns and operates a glass recycling business. He designed a machine — the SuperSorter — that sorts glass by colour before it is crushed and recycled. John's invention will make the glass-sorting process cheaper and increase the profits for his business.

John believes the SuperSorter has world-wide market potential and would like to commercialize it. He is seeking advice from the Office of Applied Research of his former college on how best to protect and commercialize the invention.

Topics covered

• Trade secrets versus patents
• Non-disclosure or confidentiality agreements
• Impact of disclosure on patent rights
• Requirements for patent protection
• IP strategy and commercialization options

Sample questions

• Under what circumstances is a non-disclosure or confidentiality agreement signed? What are the main elements of such an agreement?
• How should one decide on commercialization options?
• What are the costs and benefits of registering a trademark?

Kim Wilson has been awarded a prestigious Canadian Institutes of Health Research postdoctoral fellowship to work in a stem cell research lab at the University of Toronto. Their collaboration is leading to significant discoveries: a new system for creating induced pluripotent stem (iPS) cells and an iPS cell line that can be coaxed to differentiate into cells that would be useful for the treatment of spinal cord injuries.

Although Kim is interested in commercializing some of her research, she would like to ensure that doing so would not prevent other researchers from having access to her findings.

Topics covered

• Ethical issues in patenting and commercialization of stem cells
• Impact of public disclosure
• IP ownership in a university research environment
• Patent application process in foreign jurisdictions

Sample questions

• Can IP engage ethical issues?
• Should Kim publish or patent the results of her research?
• What is the commercialization process for university research outputs in the life sciences?

(2013 Version)

While on a business trip to Chicago, Canadian art dealer Frank Papadrovic buys a machine that can automatically paint high-quality oil canvasses. The vendor, Charlie Wong, had begun the process for obtaining patents through the Patent Cooperation Treaty (PCT) and registered AutoPaint as a trademark. Because the name AutoPaint was generating business, Frank registered the domain name autopaint.ca and sold many paintings despite the term in the sales contract that stated that the machine couldn't be used to produce paintings for resale. Frank is then asked to cease and desist using the machine and the domain name.

Topics covered

• Trademark rights
• Domain name rights
• Searching IP databases
• International IP regimes

Sample questions

• Can a Canadian « .ca » domain name infringe on a United States trademark?
• Was Charlie over-reaching the rights of his patent application?

A computer software small business owner was impressed while reviewing the work of a programming employee. The programmer's work identified a new way of sorting database records that was twice as fast as traditional methods. The employee had devised the idea while working on a client project. The business owner would like to know when questions regarding IP protection should be raised.

Topics Covered

• IP ownership
• Value of trademarks and patents
• Types of IP
• Importance of trade secrets
• Disclosure
• Patentability of software or code

Sample questions

• What rights are there in the client contract?
• What IP regimes apply?
• What types of IP protection are available and which one should be secured?

Silver Communications, a Canadian telecommunications company, is in the design phase of a new device that incorporates a cell phone, PDA, MP3 player, GPS chip and Internet capabilities. There is concern that the new device may have nearly the same design as their competitor's product, for which an industrial design application has already been submitted. A former intern, who is now employed by the competitor, is believed to have leaked information.

Topics covered

• Industrial design protection
• Trademark protection
• Patent protection

Sample questions

• Can a company apply to register a design that isn't theirs?
• Since the buttons have a functional aspect in the design, can it be said that that function means that the design cannot be registered?

A researcher in a pharmaceutical company appears to have discovered a molecule that seems to have a significant effect in the treatment of melanoma, a form of skin cancer. Research was done in patent databases to verify if any patents have been issued for the chemical compound.

The researcher found that in 1993 a patent was issued to another company for a compound that has the same chemical structure, but it had since expired due to non-payment of renewal fees. Having little experience in dealing with intellectual property, the researcher wonders if a patent can be filed for her research.

Topics covered

• Value of information found in IP databases
• Defining and protecting a new discovery
• Criteria for patentability

Sample questions

• What rights would a patent give Telecan?
• How does an expired patent affect a new discovery?

(2013 Version)

Just after she turned 18 and before starting classes at Provincial Technical University (PTU), Samantha Chang got a summer job in the PTU engineering research lab. She works in the laboratory of Professor John Milbourne. Samantha's status is unclear as the professor pays a small monthly stipend out of a miscellaneous research account for work delivered.

That summer Professor Milbourne's lab was puzzling out a quality control problem faced by a client, AutoPartsCo. As part of this project, Samantha develops and implements an idea worth thousands of dollars to the client company. The client wants to file a patent on the idea.

Topics covered

• Inventor/patent owner distinction
• Policies governing intellectual property in universities
• Public disclosure
• Trade secrets

Sample questions

• What rights does Samantha Chang have regarding her idea?
• Is Samantha's idea patentable since it uses existing technology?
• What rights does the company, AutoPartsCo, have in relation to the invention?

WiTech, a Canadian company in the field of wireless phones and PDAs, is working on perfecting voice-over WiFi devices. In order to demonstrate progress, the R&D director had a patent issued in Canada and the United States. The patent probably should not have been issued because the project manager knew that there were two serious problems: some of the work described had not been done at the time of the filing, and he had purposely failed to disclose some information that he was aware of that would have likely blocked the patent.

WiTech's senior management is questioning if they should sue a small company in the U.S. for patent infringement. The project manager must now consider ethical issues when asked to offer an opinion on the lawsuit.

Topics covered

• IP and ethics
• IP ownership
• Disclosure and patents

Sample questions

• Can IP engage ethical issues?
• Who owns the IP?
• What tests are needed to determine patentability?
• What should the R&D director have done to protect the invention?